Seattle Trademark Lawyer

Plaintiff’s “Sparkling Ice” and
Defendant’s “Cascade Ice” water products

On July 2, Preston, Wash.-based Talking Rain Beverage Co. filed suit in the Western District against Everett, Wash.-based Unique Beverage Co., LLC, for trademark infringement.

Talking Rain has registrations for ICE for water and SPARKLING ICE for soft drinks. It alleges the competing bottled water company’s registration of CASCADE ICE for water and application to register CASCADE ICE SKINNY COCKTAILS for cocktail mixes infringes Talking Rain’s trademark rights.

Unique Beverages has appeared in the case but has not yet filed an answer.

The case cite is Talking Rain Beverage Co. v. Unique Beverage Co., LLC, No. 10-1097 (W.D. Wash.).

On July 6, the Ninth Circuit decided a trademark case with an interesting twist.

The family-owned Mindys Cosmetics, Inc., sued its attorney for malpractice, breach of fiduciary duty, and conversion. The case concerns advice the attorney gave one of Mindys owners to register in her own name two trademarks the company formerly had owned but whose registrations had expired.

The attorney moved to strike the claims against him based on California’s anti-SLAPP statute, which protects against Strategic Lawsuits Against Public Participation. 

The Central District of California denied the lawyer’s motion. 

The lawyer appealed.

The Ninth Circuit found that filing a trademark registration constituted a “protected act,” and that the suit arises from that protected act, implicating anti-SLAPP protection.

“Each of Mindys’ causes of action arises not out of a general breach of duty, but out of [attorney Kia] Kamran’s act of filing the trademark application in [Sonya Dakar’s] name. The trademark application was not ‘incidental’ to the causes of action, but was their gravamen. But for the trademark application, Mindys would have no reason to sue Kamran. Because Mindys’ claims arose from Kamran’s act of applying to register the trademarks in Sonya’s name, they are properly subject to an anti-SLAPP motion.”

However, the court also concluded there was sufficient merit to Mindys’ claims that the suit should be allowed to proceed. For example, the court found that if Mindys’ evidence is credited, the lawyer “was at least negligent in determining who had authority to act on behalf of Mindys. Kamran admits that he took instructions to register the trademarks” from four different people, including one person Mindys argued had no authority to instruct him on behalf of the company.

For this reason, the court found “Mindys has thus made at least a minimal showing that Kamran did not ‘use such skill, prudence, and diligence as lawyers of ordinary skill and capacity commonly possess and exercise in the performance of the tasks which they undertake.’ Crediting the evidence submitted by Mindys, as we are required to do, Mindys has demonstrated a ‘reasonable probability,’ within the meaning of the anti-SLAPP statute, of prevailing on its malpractice and breach of fiduciary duty claims.”

The case cite is Mindys Cosmetics, Inc. v. Dakar, __ F.3d __, 2010 WL 2652480, No. 09-55134 (9th Cir. July 6, 2010). 

Alf Temme, a self-confessed typosquatter and defendant in a lawsuit Microsoft brought discussed here and here, went public again last week with a guest post in the Seattle P-I titled, “Why I typosquatted and why it should be legal.”

In it, he discusses his run-ins with Alaska Airlines, Air France, Dell, and Microsoft, and why the Anticybersquatting Consumer Protection Act makes for bad public policy.

Here’s some of why Mr. Temme believes he’s misunderstood:

“After the Dell disaster, I would have been quite justified to dump all the typo domains I was saving for their rightful claimants, but that would have done exactly what I wanted to prevent with my ill-fated domain-registration consulting service. I didn’t want malicious typosquatters to snatch them up.

“I had registered 24 Microsoft typo domains during my consulting experiment. Without sending me a demand letter first, Microsoft filed suit in March, demanding the 24 domains and up to $2.4 million – plus legal costs – in damages. Simultaneously, I received an offer from Microsoft to settle the case for $500,000.

“Tim Cranton, a Microsoft associate general counsel, is in charge of pursuing and suing all Internet-related criminals. He is doing a brilliant job, as is evident from the many victories of his I found on Google. Cranton identified me, Alf Temme, as a particularly egregious cyber criminal, telling seattlepi.com he wanted to make an example of me to dissuade others from typosquatting. Based on all the negative information you can find about me on Google, I think he took the right approach.

“The reality is, I am not the kind of person portrayed by all those Google results. If I were that kind of person, I certainly would not have registered all those domains with my correct contact information. I did not register them with the popular “private” registration option and I did not register them in some offshore jurisdiction like Korea, Bermuda or the Bahamas.

“So Tim Cranton must have concluded that I must be a complete idiot of a typosquatter for not taking these precautions. Most other people will decide I must be an idiot, because they cannot conceive of the possibility that I might just be an exception to the exceedingly mean and dishonest society we have created in the past 40 years.”

In CertainTeed Corp. v. Seattle Roof Brokers, a manufacturer of asphalt shingles filed suit against James Garcia, a “roof broker” who allegedly made false statements about CertainTeed’s roofing products.

On June 28, Western District Judge Richard Jones granted summary judgment for CertainTeed on its false advertising and Consumer Protection/Unfair Business Practices Act claims, and imposed a permanent injunction.

In doing so, the court found Mr. Garcia’s falsehoods included statements that CertainTeed’s product “will not be able to pass a resale inspection after 15 to 20 years”; that “one roofing contractor reports submitting over 600 warranty claims to CertainTeed within the last four years”; and CertainTeed’s product “have a history of premature failure.”

Gotta love a court that gives its parties options.

In its permanent injunction, the court stated: “As to Mr. Garcia’s website (whether at www.seattleroofbrokers.com or any other domain he controls), he has two options. He may, at the top of every page on his website, include a prominent hyperlink (of a font size at least as large as any other font used on the page) to an electronic version of this order. The text of the hyperlink shall include the following statement: ‘Please click here for court order finding that this website contains false statements.’ His website must continue to include these hyperlinks until he removes every false statement that violates this order, at which time he can notify the court that the false statements have been removed. If the court finds that the false statements have been removed, it will permit him to remove the hyperlinks. Alternatively, Mr. Garcia may take his website ‘offline,’ remove the false statements, submit the new website content to the court for approval, and await court approval before placing his website online.”

The case cite is CertainTeed Corp. v. Seattle Roof Brokers, No. 09-563 (W.D. Wash. June 28, 2010) (Jones, J.).

“She sells sea shells by the sea shore. That’s swell, but how about Shell espresso, Tide motor oil, Apple bicycles and Playboy computers? We consider the application of anti-dilution law to trademarks that are also common English words.”

One guess which Ninth Circuit judge wrote the this opinion?

Judge Alex Kozinski is a great writer. He wrote the opinion in Visa Int’l Service Association v. JSL Corp., which the court handed down on June 28.

The case considered whether the mark EVISA, which evolved from ELKAIWA VISA, for an Internet language school dilutes the credit card processing association’s famous VISA trademark. “Elkaiwa” is Japanese for English conversation, which when paired with “visa” is meant to suggest the ability to travel through the English-speaking world.

The District of Nevada granted summary judgment for Visa International, enjoining JSL Corp.’s use of the mark on the ground it was likely to cause dilution.

JSL appealed, arguing its EVISA cannot cause dilution because visa is a travel document authorizing the bearer to enter a country’s territory. The Ninth Circuit noted that “When a trademark is also a word with a dictionary definition, it may be difficult to show that the trademark holder’s use of the word is sufficiently distinctive to deserve anti-dilution protection because such a word is likely to be descriptive or suggestive of an essential attribute of the trademarked good.”

The court seemed to sympathize with JSL Corp.’s position, but found that its use of “visa” as a trademark despite its ordinary meaning is still likely to dilute Visa International’s famous mark.

“It’s true that the word visa is used countless times every day for its common English definition, but the prevalence of such non-trademark use does not undermine the uniqueness of Visa as a trademark. ‘The significant factor is not whether the word itself is common, but whether the way the word is used in a particular context is unique enough to warrant trademark protection.’ In the context of anti-dilution law, the ‘particular context’ that matters is use of the word in commerce to identify a good or service. There are, for instance, many camels, but just one Camel; many tides, but just one Tide. Camel cupcakes and Tide calculators would dilute the value of those marks. Likewise, despite widespread use of the word visa for its common English meaning, the introduction of the eVisa mark to the marketplace means that there are now two products, and not just one, competing for association with that word. This is the quintessential harm addressed by anti-dilution law.”

The case cite is Visa Int’l Serv. Assoc v. JSL Corp., __ F.3d __, 2010 WL 2559003, No. 08-15206 (9th Cir. June 28, 2010).